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Thursday, June 06, 2019

Patentable Subject Matter

Congress is considering legislation to amend 35 U.S.C. Section 101. This section defines eligible subject matter for patents. In recent years, the Supreme Court has read this provision more narrowly (or more correctly, depending on your point of view) to exclude many types of software and medical diagnostics as unpatentable. Some of the firms in these industries, as well as some members of the Federal Circuit, are unhappy with these decisions. Enter Congress, which held a hearing on the issue last week.

I am not particularly keen to see Congress change Section 101. A limited exception that would make medical diagnostic tests patentable (instead of an unpatentable application of nature) is fine with me. But going further would probably be a big mistake and give patent trolls new life.

To my mind, the problem is that the Court should have held business methods unpatentable in Bilski. In his new memoir, Justice Stevens explains that there was a majority for that position initially, but that after he circulated his draft opinion Justice Scalia changed his mind. I think his dissent in Bilski provides a clearer way of delineating patentable subject matter than the Court's subsequent cases do. Thus, I would like to see Congress think about incorporating his analysis. (The proposed legislation sort of does that by using the word "technology" to define utility, which can be read to exclude business methods. But that could be made clearer.)